DECISION

of the Fourth Board of Appeal

of 3 December 2015

In Case R 1715/2014-4

FON WIRELESS Limited
25 Farringdon Street London EC4A 4AB United Kingdom	Opponent / Appellant

represented by PONS PATENTES Y MARCAS INTERNACIONAL, S.L., Glorieta de Rubén Darío, 4, E-28010 Madrid, Spain

v

FÓNUA LIMITED
Unit 2 77 Furze Road Sandyford Industrial Estate Dublin 18 Ireland	Applicant / Respondent

represented by LK SHIELDS SOLICITORS, 39/40 Upper Mount Street, Dublin 2, Ireland

APPEAL relating to Opposition Proceedings No B 1 968 083 (Community trade mark application No 10 301 323)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), C. Bartos (Rapporteur) and E. Fink (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 29 September 2011, the respondent sought to register the sign

FONME!

for the goods and services in Classes 9, 16, 35, 37 and 39.

2. On 1 February 2012, a notice of opposition was filed by the appellant, based on several earlier rights. The grounds of opposition were those laid down in Article 8(1)(b) CTMR. The opposition was directed against the goods and services of the contested application.

3. On 5 May 2014, the Opposition Division rejected the opposition in its entirety and ordered the appellant to bear the costs.

4. The appellant filed a notice of appeal, followed by a statement of grounds. It requested the Board to annul the contested decision and to reject the application for the contested goods and services.

5. On 1 December 2015, the respondent restricted its list of goods and services as follows (strikethrough indicates terms deleted, underlined terms are added as an exclusion):

Class 9 − Electronic apparatus namely mobile phones and mobile phone accessories including but not limited to modems, cases, car kits, wireless headsets, wireless visors, holders and suction mount cradles, in-car-chargers (ICCs), mains chargers, travel adaptors for mains chargers, memory cards, earphones, headphones, screen protectors, pouches, speakers, universal and specific mobile phone cases, vouchers / tokens of value in electronic form, batteries, and wired headsets; fixed line telecommunications equipment; and bespoke mobile asset tracking and data collection products;

Class 16 − Vouchers/tokens of value in paper form;

Class 35 − Advertising and promotional services, including but not limited to outbound managed telesales campaigns; retail services connected with the sale of electronic apparatus, including but not limited to mobile phones and mobile phone accessories (except modems and routers); mail order retail services connected with the sale of mobile phones and mobile phone accessories (except modems and routers); the bringing together, for the benefit of others of a variety of mobile phones and mobile phone accessories enabling customers to conveniently view and purchase those goods from an internet website or from a merchandise catalogue by means of telecommunications or by mail order;

Class 37 − Installation of telecommunications services and equipment, including but not limited to mobile phone car kits and fixed line telecommunications equipment (except modems and routers);

Class 39 − Distribution of electronic apparatus; distribution of mobile phones; distribution of mobile phone accessories; distribution of fixed line telecommunications equipment; distribution of bespoke data solution products, including but not limited to products relating to field data collection, asset and vehicle tracking; all the services abovementioned with the express exception of distribution of modems and routers.

6. On 2 December 2015, the appellant informed the Office that it withdraws the opposition and the appeal.

Reasons

7. The limitation filed by the respondent is acceptable.

8. As a result of the withdrawal of the opposition, the opposition and appeal proceedings are terminated. The decision of the Opposition Division does not become final.

Costs

9. The Board notes that since the appellant withdrew its opposition following a limitation of the list of goods and services by the respondent, it is appropriate that each party bear its own costs in the opposition and appeal proceedings in accordance with article 85(2) CTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Accepts the following list of goods and services:

Class 9 − Electronic apparatus namely mobile phones and mobile phone accessories including but not limited to cases, car kits, holders and suction mount cradles, in-car-chargers (ICCs), mains chargers, travel adaptors for mains chargers, memory cards, earphones, headphones, screen protectors, pouches, speakers, universal and specific mobile phone cases, vouchers / tokens of value in electronic form, batteries, and wired headsets; and bespoke mobile asset tracking and data collection products;

Class 16 − Vouchers/tokens of value in paper form;

Class 35 − Advertising and promotional services, including but not limited to outbound managed telesales campaigns; retail services connected with the sale of electronic apparatus, including but not limited to mobile phones and mobile phone accessories (except modems and routers); mail order retail services connected with the sale of mobile phones and mobile phone accessories (except modems and routers); the bringing together, for the benefit of others of a variety of mobile phones and mobile phone accessories enabling customers to conveniently view and purchase those goods from an internet website or from a merchandise catalogue by means of telecommunications or by mail order;

Class 37 − Installation of telecommunications services and equipment, including but not limited to mobile phone car kits and fixed line telecommunications equipment (except modems and routers);

Class 39 − Distribution of electronic apparatus; distribution of mobile phones; distribution of mobile phone accessories; distribution of fixed line telecommunications equipment; distribution of bespoke data solution products, including but not limited to products relating to field data collection, asset and vehicle tracking; all the services abovementioned with the express exception of distribution of modems and routers;

2. Takes note of the withdrawal of the opposition;

3. Closes the opposition and appeal proceedings;

4. Orders each party to bear its own costs.

Signed D. Schennen

Signed C. Bartos

Signed E. Fink

Registrar: Signed H.Dijkema